UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

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GETTY IMAGES (US), INC.,
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:
Plaintiff,
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-v:
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MICROSOFT CORPORATION,
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Defendant.
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:
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14cv7114 (DLC)
OPINION
AND ORDER

Appearances:
For Plaintiff:
Kenneth L. Doroshow
Amir H. Ali
Jenner & Block LLP
1099 New York Avenue, N.W., Suite 900
Washington, DC 20001-4412
Alison I. Stein
Jenner & Block LLP
919 Third Avenue, 37th Floor
New York, NY 10022
For Defendant:
David Hosp
Mark S. Puzella
Elizabeth E. Brenckman
Sheryl K. Garko
Fish & Richardson P.C.
One Marina Park Drive
Boston, MA 02110
DENISE COTE, District Judge:
This action concerns a copyright dispute between plaintiff
Getty Images Inc. (Getty) and defendant Microsoft Corporation

(Microsoft).

On or about August 22, 2014, Microsoft launched

a beta or test version of the Bing Image Widget (Widget).

The Widget enables web developers to link to Microsoft Bing
Image Search results and display those results on their
webpages.

Getty brought suit on September 4 seeking injunctive

relief, and statutory and actual damages. 1

On October 3,

Microsoft filed this motion to dismiss Gettys amended complaint

(Amended Complaint), filed on September 24.

The motion to

dismiss is denied for the reasons stated below.

BACKGROUND
The following facts are asserted in the Amended Complaint
and taken from documents integral to the Amended Complaint
unless otherwise noted.

Getty has attached as exhibits to the

Amended Complaint a list of images, copyright registration

certificates, and screenshots of the Bing Image Widget website.
Getty is one of the worlds largest providers of commercial
visual content and the leading provider of commercial images
online.

Getty generates revenue primarily by licensing the

rights to use its content.

Getty filed a motion seeking a preliminary injunction on

September 5. The motion for a preliminary injunction was denied
on October 16. Getty Images (US), Inc. v. Microsoft Corp.,
14cv7114 (DLC), 2014 WL 5285697, at *1 (S.D.N.Y. Oct. 16, 2014).

Microsoft is a multinational company that develops,

produces, licenses, and sells a wide variety of products and
services.

One of Microsofts services is the Bing Internet

Search Engine which permits users to search for content across

the Internet.

Like other search engines, Bing uses automated

tools to crawl the Internet for content.

Bing continuously

analyzes webpages that it has crawled and selects content to

be stored and indexed to respond to searches conducted by users
of the Bing Search Engine.

When the user enters a search term

into the Bing search box, Bings software searches its index for
websites responsive to the query and provides the user with a
list of results on a results page.
One of the search functions available through the Bing
Internet Search Engine is Bing Image Search, which permits users
to search specifically for images.

In creating the index for

the Bing Image Search, Microsoft makes a copy of the indexed

image by storing a reduced-size file (thumbnail) on
Microsofts servers in a Thumbnail Library.
On or about August 22, 2014, Microsoft launched a test
version of the Widget.

The Widget is a tool that can be used by

website developers to display Bing Image Search results on their

own websites in a display panel bearing the Bing logo.

To use

the Widget, a website developer goes to the Bing Image Widget

website.

The developer then makes selections to customize the

results, such as the query to run, the number of images to be

displayed, and how the results should be displayed.

The images

are shown in a display panel with the Bing logo across the
bottom on the third-party website.
A number of websites around the world, including commercial
websites, implemented the Widget following its release in
August.

Getty is the owner or exclusive licensee of copyrights

for the images that are the subject of this action, including
the sixty-two works identified in an exhibit to the Amended
Complaint.

Through the Widget, Microsoft reproduced,

distributed, and publicly displayed Gettys copyrighted images.

DISCUSSION
When deciding a motion to dismiss under Rule 12(b)(6), Fed.
R. Civ. P., a court must accept all allegations in the
complaint as true and draw all inferences in the non-moving
partys favor.

LaFaro v. New York Cardiothoracic Group, PLLC,

570 F.3d 471, 475 (2d Cir. 2009).

To survive a motion to

dismiss, a complaint must contain sufficient factual matter,

accepted as true, to state a claim to relief that is plausible
on its face.

Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)

(citation omitted).

Asking for plausible grounds does not

impose a probability requirement at the pleading stage; it

simply calls for enough fact to raise a reasonable expectation
that discovery will reveal evidence of illegal[ity].
Corp. v. Twombly, 550 U.S. 544, 545 (2007).

Bell Atl.

The Twombly

plausibility standard, which applies to all civil actions does

not prevent a plaintiff from pleading facts alleged upon
information and belief where the facts are peculiarly within the
possession and control of the defendant, or where the belief is
based on factual information that makes the inference of
culpability plausible.

Arista Records, LLC v. Doe 3, 604 F.3d

110, 120 (2d Cir. 2010) (citation omitted).

A complaint must do more, however, than offer naked
assertions devoid of further factual enhancement.
U.S. at 678 (citation omitted).

Iqbal, 556

A court is not bound to accept

as true a legal conclusion couched as a factual allegation.

Id.
For purposes of a motion to dismiss, we have deemed a
complaint to include any written instrument attached to it as an
exhibit or any statements or documents incorporated in it by
reference, as well as . . . documents that the plaintiffs either
possessed or knew about and upon which they relied in bringing
the suit.

Rothman v. Gregor, 220 F.3d 81, 88 (2d Cir. 2000)

(citation omitted).
Microsoft essentially argues that dismissal is warranted
because Getty has not sufficiently plead the source of its
rights in the sixty-two works, or how Microsoft infringed those
rights.

Microsoft also contends that Gettys claims must be

limited to the sixty-two works it identifies in its Amended

Complaint.

These arguments will be considered in turn.

A. Dismissal of the Complaint

To establish infringement of copyright, two elements must
be proven: (1) ownership of a valid copyright, and (2) copying
of constituent elements of the work that are original.

The word

copying is shorthand for the infringing of any of the

copyright owners five exclusive rights described in 106.
Arista Records, 604 F.3d at 117 (citation omitted).
Reproduction, distribution, and public display are exclusive
rights listed in Section 106.

17 U.S.C. 106.

Microsoft first argues that Getty has failed to

sufficiently allege ownership of the sixty-two works identified
in an exhibit attached to the Amended Complaint.

The Amended

Complaint identifies Getty as either the owner or exclusive

licensee of each work.

Microsoft argues that Getty must further

describe the scope of Gettys rights.

This claim fails.

[E]xclusive licensees are treated as copyright owners for

the purpose of protection and remedy under the Copyright Act.

Morris v. Business Concepts, Inc., 259 F.3d 65, 70 (2d Cir.
2001); see also Random House, Inc. v. Rosetta Books LLC, 283
F.3d 490, 491 (2d Cir. 2002).

To provide fair notice to

Microsoft of the basis of its claim, Getty is not required to

provide further detail about the nature of its exclusive
licenses.
Microsoft next argues that Getty has failed to allege a
single instance of infringement by a third-party Widget user of
any one of the sixty-two works.

This argument also fails.

Getty has alleged that the images used in connection with the
Widget included Gettys copyrighted images.

That Getty has not

identified in the Amended Complaint the third-party websites

that, through the Widget, displayed the images, or the dates on
which they began to do so, does not render the claim defective.
Again, Getty has provided Microsoft with the fair notice of the
nature of its claim required by Fed. R. Civ. P. 8.
In a related argument, Microsoft suggests that Gettys
action must be confined to the sixty-two identified works and
cannot encompass works not identified in the Amended Complaint.
Getty has alleged that the infringement committed using the
Widget extended beyond the sixty-two images.

Given the dynamic

nature of the Widget, it would be difficult, if not impossible,

for Getty to comprehensively list (as of the date it filed the

Amended Complaint) all of its images that were used in the
Widget.

This information, if it exists, is in the possession

and control of Microsoft.

Moreover, any claim for an image will

be virtually identical to the claims already brought.

Getty

will not therefore be limited at this stage of the action to

pursuing claims for infringement premised solely on the sixtytwo works.
B. Statutory Damages
Finally, Microsoft contends that statutory damages are
inappropriate as a matter of law for twelve of the sixty-two
works because they were not registered for copyright protection
until after the alleged infringement commenced.

Under 17 U.S.C.

504, a copyright owner may elect to receive statutory damages

rather than actual damages.

Statutory damages are not

available, however, for any infringement of copyright commenced

after first publication of the work and before the effective
date of its registration, unless such registration is made
within three months after the first publication of the work.
17 U.S.C. 412; see Bus. Trends Analysts, Inc. v. Freedonia
Grp., Inc., 887 F.2d 399, 403-04 (2d Cir. 1989).

Microsoft

contends that any infringement commenced on August 21, when

the Widget was made available for public use, that the twelve

copyrights were registered after that date, and that this is

more than three months after initial publication of the works.
The parties agree on the principle of law that will be
applied here.

Getty agrees that it will not be able to recover

statutory damages for copyrights registered after the

infringement occurred if the registration date was more than
three months after initial publication. 2

CONCLUSION
Microsofts October 3 motion to dismiss Gettys Amended
Complaint is denied.

Dated:

New York, New York

November 24, 2014

__________________________________
DENISE COTE
United States District Judge

Assuming that the use of an image through the operation of the

Widget constitutes reproduction, distribution, or public
display, an act of infringement occurs each time an image is
used in the Widget. Thus, the relevant date for the purposes of
17 U.S.C. 412 will be the date on which an image is used, not
the date when the Widget became available to the public.